Upcoming examination request deadlines and a change in practice at the Intellectual Property Office of New Zealand (IPONZ);

Proposed increases to official fees; and

Possible introduction of ‘Disclosure of Origin’ requirements.

1. Directions to Request Examination - Where Have They Gone?

In New Zealand, patent applications are not automatically placed in a queue for examination once they are filed. Rather, the Applicant must request examination, either 2 months after the issuance of a Direction to Request Examination, or before the overriding deadline of 5 years from the filing date. In our experience, most Applicants tend to wait for a Direction to issue before requesting examination, which in the past has been a reasonable course of action, given the regularity with which IPONZ once issued such directions.

However, Directions to Request Examination are no longer being issued by IPONZ. This can result in examination not being requested until close to the 5-year deadline for some applications.

Beware the rise of the zombie (divisional)

Significantly, the same 5-year examination deadline also applies to divisional applications as they are provided the same filing date as the parent application. Therefore, if examination is requested close to the 5-year deadline for the parent application, this may limit the ability of the Applicant to file a divisional application, either to claim excised subject matter or continue prosecution by filing a divisional before the expiry of the acceptance deadline. This will particularly apply where prosecution of the parent application extends past the 5-year deadline.

As there is currently no restriction on filing a divisional application after this 5-year deadline, a divisional application may be validly filed after the 5-year anniversary of the filing date, but can never be examined, resulting in a ‘zombie divisional’ that is validly filed (thus attracting maintenance fees) but will never be granted or enforceable.

Our advice

Current Applicants for a New Zealand patent need to be aware of this deadline. If a divisional application may be required, to either claim additional subject matter or if the prosecution is expected to be problematic, then the divisional application must be filed and examination requested before the 5-year deadline passes. To avoid this problem, we suggest requesting examination no later than 3 years from the filing date for all applications in New Zealand, to ensure that prosecution is underway before a decision needs to be made on whether or not to file a divisional application.

The issue of ‘zombie divisionals’ may be rectified in the upcoming changes to the Patents Act 2013 that will be released for public consultation next year in the Omnibus Patents Bill. However, the amendments are likely to prevent filing of a divisional application after the 5-year deadline, rather than alter how the 5-year deadline is applied to divisional applications.

2. Fee increases on the way

IPONZ has released their proposed official fee increases in a discussion document. If legislated as proposed, it would result in a significant increase in official fees throughout the lifecycle of a patent. The notable changes include:

An excess claims fee of $200 for each set of 10 claims over 30 will be introduced, payable when requesting examination;

An increase in fees for requesting examination, from $500 to $750;

An increase in the fee to amend an application after acceptance, from $100 to $500-$600 (depending on which Act governs the patent or application); and

Significant changes to renewal fees, depending on which Act the patent was granted under (summarised below, Table 1).

Table 1

1953 Act (paid once)

Proposed fee (current fee)

2013 Act (paid annually)

Proposed fee (current fee)

4th year

$600 ($170)

4th – 9th year

$200 ($100)

7th year

$600 ($340)

10th – 14th year

$450 ($200)

10th year

$1,350 ($540)

15th – 19th year

$1,000 ($350)

13th year

$5,900 ($1,000)

Once these new fees are legislated and in effect, they will apply when they are next payable. For instance, if the 13th year renewal of a 1953 Act patent is due after these new fees are in force, the fee will be $5,900, not the current $1,000.

We expect that the legislated fees are going to be close to those in Table 1 and will take effect from mid-2019. To avoid increases to the examination request fees and the new excess claims fees, examination should be requested before these amended provisions take effect.

Note: All fees indicated above are in New Zealand dollars.

3. Are ‘Disclosure of Origin’ Requirements on the Horizon?

The Patent Office is currently seeking public submissions regarding a proposal to introduce ‘Disclosure of Origin’ requirements for all applications relying on either genetic resources (GR) or traditional knowledge (TK). This will apply to applications for both patents and plant variety rights (PVR).

The proposed levels of disclosure vary from a simple declaration stating the country of origin of the GR or TK (if known), through to providing a country of origin declaration accompanied by evidence of access and benefit sharing arrangements with the origin country. Seemingly, maintaining the status quo is not a proposal being considered in these consultations.

Regardless of the level of disclosure that will be required, such provisions will increase the time and effort required to obtain patent protection for inventions relying on GR or TK. These proposals are currently open for public consultation, and will close on 21 December 2018.

Conclusion

Recent and proposed changes in New Zealand may impact Applicants that have filed, or are looking to file, in New Zealand, as well as Patentees with in-force patents. We suggest:

Considering whether examination should be requested now for applications where:

the New Zealand filing date is greater than 3 years ago, especially if a divisional application may be required to extend prosecution or to claim subject matter deleted to overcome a unity of invention objection; or

there are more than 30 claims currently pending, so that examination can be requested before the new fees come into effect;

Contacting us if you are concerned about the upcoming changes to the renewal fees, particularly for 1953 Act patents and applications; and

Keeping in mind that applications relying on genetic resources or traditional knowledge may require additional declarations to be made in the future, either at filing and/or before acceptance.

We will provide further updates as the above amendments and provisions are legislated in New Zealand. In the meantime, please don’t hesitate to contact us if you have any questions.

Spruson & Ferguson companies are members of the IPH Ltd group, an ‘ownership group’ for the purposes of the Code of Conduct for Trans-Tasman Patent and Trade Marks Attorneys 2018. For more information see ‘Ownership Group’.